Womble Carlyle Attorneys Kristen Cramer & Barry Herman Speak on Preserving Privilege in Patent Litigation

PHILADELPHIA—Womble Carlyle attorneys Kristen Cramer and Barry Herman helped lead a seminar titled “Easy to Claim but Harder to Preserve – Preserving Privilege from the GC’s Office to Patent Counsel’s Office Here and Abroad” for the Association of Corporate Counsel’s Greater Philadelphia Chapter.

Jimmie Johnson of Johnson Matthey Inc. and Saint-Gobain Corporation Senior IP Counsel Alexander Plache also served as presenters at the April 27 session.

Most in-house counsel have a good handle on protecting attorney-client and work product privilege.  But numerous scenarios can arise that may erode the privilege.  The panel discussed privilege issues that have been addressed in recent patent/complex actions and provide practice tips so in-house general and patent counsel can ensure the privilege is protected. 

Questions addressed included:

• When are communications with foreign legal or patent departments protected, and what advice can U.S. counsel pass on to employees to ensure that the privilege is maintained? 
• Can you waive privilege by failing to issue a litigation hold notice at the appropriate time? 
• When can an advice of counsel defense (such as to willful infringement) result in a waiver of post-litigation communications? 
• When are product tests or design around test results protected as work product? 

Kristen Cramer represents domestic and international clients as lead counsel in patent infringement actions in federal district and appellate courts and as Delaware counsel in the District of Delaware, with a focus on Hatch-Waxman litigation. She has litigated patent matters involving pharmaceuticals, medical devices, biotechnology, consumer products and electronics, computer networks, power, and business methods, among other technologies.

Barry Herman is an intellectual property litigation partner working in Baltimore. He represents both domestic and foreign clients in a wide range of intellectual property matters, with an emphasis on patent litigation in district courts, the International Trade Commission, and the USPTO.